S.D.N.Y. Holds that Publishers May Embed Content Publicly Posted on Instagram Platform — (Sinclair v. Ziff Davis, LLC et al.)

ince the emergence of social media, courts, content
creators, and publishers alike have been grappling with legal issues concerning
the practice of “embedding” copyrighted content.  Following the controversial February 2019
decision in Goldman
v. Breitbart News, LLC – rejecting the Ninth Circuit’s “server
test” and holding that an embed constitutes a “public display” exposing a
content user to liability under the Copyright Act – the pendulum had seemingly
swung in favor of content owners, creators, and licensors. 

Yesterday, however, Judge Kimba Wood of the U.S. District
Court for the Southern District of New York, issued a ruling in Sinclair
v. Ziff Davis, LLC et al, providing publishers and other content
users with a defense to alleged copyright infringement premised on the practice
of embedding in the context of social media platforms: a valid sublicense
granted to the user by Instagram via the interrelated agreements available on
its platform. 

Sinclair, a professional photographer, publicly shared her
copyrighted photograph “Child, Bride, Mother/Child Marriage in Guatemala” on
her public Instagram page, which was viewable by anyone.  Media and entertainment platform Mashable
made an offer to license the photograph from Sinclair for use in an article
entitled “10 female photojournalists with their lenses on social justice.”  Sinclair rejected Mashable’s offer, but
Mashable proceeded to use Instagram’s application programming interface, or
“API,” to embed Sinclair’s original Instagram post in its article.  The embed frame of Sinclair’s Instagram post,
as it appeared in the Mashable article, was hosted on Instagram’s servers,
linked back to Sinclair’s Instagram page, and included the photograph,
Sinclair’s original caption, and the date of the original post.  The Mashable article specifically discussed
Sinclair and her work above the embed. 
Sinclair filed suit against both Mashable and its parent company Ziff
Davis, LLC for copyright infringement.

Mashable’s chief argument was that Instagram’s integrated
agreements (i.e., its Platform
Policy, Terms of Use, and Privacy Policy) clearly granted it a sublicense to
display the photograph.  Indeed, the
Terms of Use stated that, by posting content to Instagram, the user “grant[s]
to Instagram a non-exclusive, fully paid and royalty-free, transferable,
sub-licensable, worldwide license to the Content that you post on or through
[Instagram], subject to [Instagram’s] Privacy Policy.”  Pursuant to Instagram’s Privacy Policy, users
can revoke Instagram’s sub-licensable right by designating the content at issue
as “private.”  Because Sinclair posted
the photograph publicly, Judge Wood opined, “Plaintiff made her choice.  This Court cannot release her from the
agreement she made.” 

While the Court conceded that Instagram’s integrated
agreements could be more concise and accessible, it declined to accept
Sinclair’s contention that the agreements were unenforceable because they were
purportedly “circular,” “incomprehensible,” and “contradictory.”

Judge Wood also touched upon a real dilemma faced by
professional photographers: deciding whether to remain in “private mode” on one
of the most popular public photo sharing platforms in the world, or to promote
and share work publicly.  On the one
hand, sharing content publicly allows widespread exposure and can be
effectively used to market and promote one’s work.  Indeed, many photographers today use
Instagram as a digital portfolio, showcasing their works to the masses.  On the other hand, if sharing content publicly
grants a valid sublicense to publishers of digital content, the licensing value
of such content may be diminished.

This holding is likely to send shock waves throughout the
creative community as rights holders may be forced to rethink how they make
their works available to the public.  Alternatively,
for publishers and media entities, it allows use of publicly available content
provided the publisher uses the embed API that links directly back to the
Instagram account user’s full Instagram page. 

As with the Goldman
case, the Sinclair holding is not
binding on other courts and does not create a per se rule with respect to the practice of embedding, and each
case will likely depend on the specific circumstances present. In Goldman, the photographer never posted
to Twitter, but rather shared his image of Tom Brady in a private Snapchat,
with one friend capturing a screen grab and further distributing it on the
Twitter platform.  Twitter’s terms,
unlike Instagram’s, do not grant publishers a sublicense to embed using the
Twitter environment.  Users of content
should note that the Instagram Privacy Policy requires the user to obtain
consent before using content in an ad.

Moving forward, courts will likely consider the terms of
service (including the content owner’s choice of privacy settings) and the type
of embedding at issue (i.e., the
“framing” of standalone images as in Goldman,
versus the prototypical “embedding” using Instagram’s API as in Sinclair).  Courts may also consider the context of the
use at issue as well, such as whether the use of the image transformed the
purpose of the original work, or whether it is merely illustrative of the
article.   Before considering embedding
any content, publishers should carefully review all relevant terms of service
and seek legal counsel as platform policies are not uniform and there is
uncertainty in the law.